Domain name - Domain name dispute
resolution policy - Trademark - Identical - Offer to Sell - Name Not Used
- No Evidence as to Extent of Use - Trademark obvious variation of
a generic term - Offer to Sell not in bad faith - No Bad Faith Registration.

Complainant owns a German registered
trademark "TOURISMA" (the Trademark) since 1999, used in connection with
telecommunications, travel arrangement and temporary accommodation. Respondent
registered "tourisma.com" (the Domain Name) on March 10, 2000 but has
not used the Domain Name since. Upon being contacted by the Complainant,
Respondent offered to sell it the Domain Name for US $75,000.

Held, Name Not Transferred
to Complainant.

The Domain Name is identical to
the Trademark but the Complainant has provided no evidence as to the extent
of its use of the Trademark, notably as to turnover figures, sales activity,
details of customers; one cannot infer that the Respondent must have known
of the Complainants business. Also, the word is an obvious variation of
a generic term.

The mere fact that the Respondent
does not offer any goods or services under the Domain Name is not conclusive
of the domain name having being registered in bad faith. Furthermore, the
offer to sell the name was in response to a request stating "do you have
plans with it, or is it possible to buy it?"; the offer to sell was therefore
not made in bad faith.

3.1. The Complaint was dated June
9, 2000, and was received by the WIPO Arbitration and Mediation Center
("WIPO Center") by e-mail on June 28, 2000, and by hard copy on June 20,
2000. The Complaint was submitted pursuant to the Uniform Domain Name Dispute
Resolution Policy implemented by the Internet Corporation for Assigned
Names and Numbers ("ICANN") on October 24, 1999, ("Uniform Policy") and
under the Rules for the Uniform Domain Name Dispute Resolution Policy implemented
by ICANN on the same date ("Uniform Rules"). The WIPO Center sent an Acknowledgment
of Receipt to the Complainant by e-mail dated June 26, 2000.

3.2. The WIPO Center dispatched a
Request for Registrar Verification to the Registrar by e-mail on June 23,
2000. By fax to the WIPO Center dated June 26, 2000, the Registrar confirmed
that:

3.2.1. it had not received a copy
of the Complaint from the Complainant;

3.2.2. it was the Registrar of the
domain name the subject of the Complaint;

3.2.3. the current registrant of
the domain name is the Respondent and that the status of the domain name
was "active";

3.2.4. the agreement with the Respondent
provides that, as registrant of the domain name, the Respondent agrees
to be bound by the Uniform Policy incorporated therein;

3.2.5. the administrative and billing
Contact for the domain name is the Respondent; and

3.2.6. it also provided postal, telephone,
facsimile and e-mail contact details for the administrative, technical,
zone and billing Contacts.

3.3. Following payment of the filing
fee and verification that the Complaint satisfied the formal requirements
of the Uniform Policy and the Uniform Rules, the WIPO Center on June 28,
2000:

3.3.1. issued a Notification of Complaint
and Commencement of Administrative Proceeding by e-mail and courier to
the Respondent and to the technical and zone contacts for the domain name
to the addresses provided by the Registrar; and

3.3.2. sent copies of this Notification
of Complaint by e-mail to the Complainant, the Registrar and ICANN.

3.4. This Administrative Panel ("the
Panel") finds that the WIPO Center has discharged its responsibility under
Paragraph 2(a) of the Uniform Rules "to employ reasonably available means
calculated to achieve actual notice to Respondent".

3.5. The Response to the Complaint
was due to be filed by July 18, 2000. However, by an e-mail dated July
11, 2000, Counsel for the Respondent requested an extension until July
28, 2000, for filing the Response, given the complexity of the issues in
hand. By an e-mail to Counsel for the Respondent and Counsel for the Complainant
dated July 13, 2000, the WIPO Center exercised its discretion and granted
the Respondent an extension of time to file its Response until July 28,
2000.

3.6. The Response to the Complaint
was filed by the Respondent by e-mail and courier and was received by the
WIPO Center by e-mail on July 28, 2000, and in hard copy on July 31, 2000,
within the time specified in the Notification of Complaint.

3.7. By an e-mail dated August 8,
2000, Counsel for the Complainant submitted an additional pleading in which
the Claimant purported to clarify the "Factual and Legal grounds" to its
Complaint. The WIPO Center received the additional pleading in hard copy
on August 10, 2000. By an e-mail dated August 10, 2000, Counsel for the
Respondent submitted a response to the "Factual and Legal grounds" of the
additional pleading of the Complainant. The WIPO Center received the Respondents
additional response on August 10, 2000. Although the rules do not provide
a right to put in further material of this nature the Respondent appears
to accept that, providing his additional response is also considered, no
objection is taken. These further submissions have therefore been taken
into account.

3.8. The Panel was constituted on
August 8, 2000, with a single panelist, Nick Gardner. A Statement of Acceptance
and Declaration of Impartiality and Independence has been filed by the
Panelist.

3.9. The date scheduled for the Panel
to render its decision is August 22, 2000. The case before the Panel was
conducted in the English language.

3.10. Having reviewed the Case File
in this matter, the Panel concurs with the assessment by the WIPO Center
that the Complaint complies with the formal requirements of the Uniform
Policy and Uniform Rules.

4. Factual Background

4.1. The Complainant is described
as being "a joint-stock company". On December 7, 1999, the German Patent
and Mark Office at Munich, Germany registered the trade and service mark
"TOURISMA" no 399 56 866 for the Complainant. The goods and services in
connection with which the mark is used are, according to the Complainant:
Telecommunications, travel arrangement and temporary accommodation.

4.2. On or around April 16, 1999,
the second level domain "TOURISMA" was registered under the top level domains
".de",".at" and ".ch" by the Complainant. Since July 1999, the Complainant
has been using these domains for offering goods and services as mentioned
above.

4.3. The Respondent applied for and
obtained registration of the "TOURISMA.COM" domain name on March 10, 2000,
such registration being effected in the name of the Respondent.

4.4. The Complainant notified the
Respondent by letter with return receipt dated May 6, 2000, that the Complainant
had registered rights in the trade and service mark "TOURISMA".

5. Parties Contentions

A. Complainant

The Complainants contentions may
be summarized as follows:

5.1. Each of the three elements specified
in paragraph 4(a) of the Uniform Policy are applicable to the domain name
the subject of this dispute.

5.2. In relation to element (i) of
paragraph 4(a) of the Uniform Policy, the Complainant contends that the
domain name is identical to the Complainants trade and service mark.

5.3. In relation to element (ii)
of paragraph 4(a) of the Uniform Policy, the Complainant contends that
the Respondent has no rights or legitimate interests in respect of the
domain name in issue and has failed to articulate any rights in or legitimate
reason for registering the domain name.

5.4. In relation to element (iii)
of paragraph 4(a) of the Uniform Policy, the Complainant contends that
the Respondent appears to have registered the domain name "TOURISMA" in
bad faith. The Complainant cites that the Respondent is not currently using
the domain name for any legitimate purpose and offered to sell the domain
name to the Complainant for US$ 75,000, an activity which corresponds to
that listed in paragraph 4(b)(i) of the Uniform Policy as evidence of bad
faith registration and use of a domain name.

B. Respondent

The Respondents contentions may
be summarized as follows:

5.5. The Respondent denies that each
of the three elements specified in paragraph 4(a) of the Uniform Policy
are applicable to the domain name the subject of this dispute.

5.6. In relation to element (i) of
paragraph 4(a) of the Uniform Policy, the Respondent admits that the registered
domain name is identical to the Complainants mark. However, the Respondent
challenges the Complainants right to exclusively own the mark.

5.7. In relation to element (ii)
of paragraph 4(a) of the Uniform Policy, the Respondent argues that the
fact the Respondent is not currently using the domain name is not indicative
of bad faith. The Respondent has expressed intentions and possibilities
of using the domain name in connection with an offering of services in
the tourism market.

5.8. In relation to element (iii)
of paragraph 4(a) of the Uniform Policy, the Respondent has not registered
and is not using the domain name in bad faith. The Respondent is in the
practice of developing innovative business plans, specifically in relation
to the hotel trade market. The Respondent is therefore not profiteering
from the bare sale of domain names. The Respondent admits that he did make
an offer to sell the domain name following an enquiry from the Complainant,
but contends that this does not demonstrate his primary purpose in registering
the domain name was to sell it to the Complainant.

6. Discussion and Findings

6.1. The Panel has reviewed the Complaint
and the Response and the documents annexed thereto. In the light of this
material and matters that are either expressly conceded or are, on the
evidence, not challenged, this Panel finds as set out below.

6.2. The domain name "TOURISMA.COM"
is identical to the registered mark dated December 7, 1999. This is conceded.

6.3. It is convenient to say at this
stage that the exchange of pleadings between the parties had become increasingly
vitriolic, each side rendering accusations at the other. The Complainant
in its supplemental pleading states, in terms, that the Respondents response
is untrue and that the exhibited documents are either manufactured or do
not carry the date that is attributed to them. The increasingly heated
exchange has culminated in the Complainant rather oddly suggesting that
the figure of US $75,000 asked by the Respondent for the domain name is
unrealistically low, hence showing the Respondent could not have been intending
to use it himself.

6.4. This Panel does not believe
it is the function of this procedure to resolve disputes of this nature
- if there is to be a dispute as to the validity of documents relied on
by the Respondent or other evidential matters that should be brought before
a competent court. The Panel will proceed on the basis that the documents
are genuine and dated as stated.

6.5. It should also be said that
much of the dispute between the parties has been directed at the question
of whether or not the Respondent had bona fide sought to develop what he
says is his plan (for a tourist related portal site) before it received
notice of the Complainants rights (i.e. before May 6, 2000). As a result
the parties have focused on the Respondents activities in seeking (he
says) to set up his web site, with effect from March 18, 2000, onwards.
That is a matter the Panel considers of peripheral relevance. The Panel
considers that the key question in this case is was the Respondents registration
(on March 10, 2000) effected in bad faith? The Complainant has to establish
this before the Panel needs to consider whether subsequent use was also
in bad faith.

6.6. It should also be said at this
stage that there are various references in the pleadings to a previous
owner of the domain name. These are not fully explained and it is not clear
to the Panel what (if anything) took place prior to March 2000 in this
regard. The Panel discounts this issue.

6.7. Clearly, the word "Tourisma"
is a variant of the word "tourism" which (in English and other languages)
is a well-known and widely used word. It is not, so far as the Panel can
see, contended by either party that the word "Tourisma" itself has any
meaning in any language. It nevertheless seems to the Panel to be a word
that could have been independently derived by more than one person and
is in any event either generic or very close to being generic when used
in relation to travel services. Whether it was in fact independently derived
by the Respondent is in issue. The Panel is in effect invited (without
any evidence) to infer that following the Complainant having commenced
its activities in 1999, the Respondent opportunistically registered the
TOURISMA.COM name knowing of the Complainants business. Against this,
the Respondent states "the Respondent had never heard of the Complainant
before the latter contacted him to try to buy the domain name".

6.8. The exact nature and extent
of the Complainants activities are not clear to the Panelist as other
than the statement that the Complainant is using the domain name, the Complainant
has provided no evidence as to the extent of its use. This does not assist
the Panel in determining precisely what reputation the Complainant has
in the term "TOURISMA". The Panel notes that the Complaint is silent as
to turnover figures, sales activity, details of customers or other material
that would assist more usefully in this area. Given this lack of detail,
the Panel is not prepared simply to infer that the Respondent must have
known of the Complainants business.

6.9. It should also be mentioned
that, even if the Respondent did know of the Complainants business, questions
might arise as to what extent a business carried out under or by reference
to what might be said to be a generic or almost generic word entitles the
proprietor of such a business to assert that any registration by a third
party of a domain name using the word necessarily constitutes "bad faith".

6.10. The mere fact that the Respondent
does not, at present, offer any goods or services under the domain name
is not in the Panels view conclusive of the domain name having being registered
in bad faith. The subsequent discussions which have taken place since the
domain names registration between the Complainant and the Respondent are
not conclusive proof of the Complainants contention that the Respondent
must have registered the domain name in bad faith. The subsequent suggestion
by the Respondent that he might sell the name for US $75,000 or more was
in response to a clear request from the Complainant stating "do you have
plans with it, or is it possible to buy it?" The Panel is not in any event
satisfied the offer to sell was made in bad faith but it certainly does
not establish that the original registration was made in bad faith.

6.11. The ex-post facto analysis
by the Complainant of what the Respondent must have known, or should have
checked, when he effected the registration does not alter this conclusion.
The burden of proof here is on the Complainant and the Panel does not consider
it has discharged it.

7. Decision

7.1. In the light of the above findings,
the Panels decision is as set out below.

7.2. The Panel concludes in the Complainants
favor that it has an identical trademark within the meaning of paragraph
4(a)(i) of the Policy.

7.3. The Panel is unable to conclude
on the evidence the extent of any further reputation the Complainant has
in the name "Tourisma". The word is an obvious variation of a generic term.

7.4. The Panel is not satisfied that
the evidence before it establishes that the domain name was registered
in bad faith, as required by paragraph 4(a)(iii) of the Policy. The Panel
takes the view that under the Policy the burden of proof falls upon the
Complainant and that in this case he has failed to provide sufficient evidence
as to his reputation in the brand name "Tourisma" to enable the Panel to
conclude the Respondent must have registered the name in bad faith.

7.5. In light of the above finding
the Panel does not need to determine whether or not the Respondent itself
has any rights or legitimate interests in the domain name (paragraph 4(a)(ii)
of the Uniform Policy) or whether the Respondents use of the name (if
any) is use in bad faith. The Panel expresses no views on these matters.

7.6. The Panel, therefore, declines
to find that the domain name should be transferred or cancelled.

7.7. No further action is required
to implement the Panels decision.

Nick GardnerSole PanelistDated: August 22,
2000

Domain Name Not Transferred

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